Thursday, June 5, 2008

Summary--102 reference just needs to mention element for it to be an enabling reference.

However, this clashes with ruling that the same exact invention must be disclosed. (Ref provided later, I hope)

On the other hand, it must be noted that the CAFC has held that proving "enablement" of prior art under 102(a) or 102(b) requires less than proving enablement for 35 U.S.C. 112P1 purposes.

Also, as we know, the burden is on applicants and patentees to prove that a prior art reference is inoperable. But the CAFC has set that bar quite high.

The most interesting case in this regard is Rasmussen:

http://www.cafc.uscourts.gov/opinions/04-1191.pdf

In Rasmussen (an interference), the Board found a patent valid in view of 102(b) art, a published EP application, because (the Board concluded) the EP application was not enabled. The Board made two key findings of fact to support its conclusion: (1) there was no reasonable scientific basis for a person of ordinary skill in the art to conclude that the method in a prior art EP application would be effective [in treating prostate cancer]; and (2) a person of ordinary skill in the art as of the publication date of the EP patent would not have believed that the method described in the patent would be effective.

The CAFC **overturned* the conclusion of non-enablement based on those findings of fact, stating that "Under the legal standard set forth in Hafner and the cases that have followed it, those findings are insufficient to support the Board’s conclusion that EP ’383 is not an enabling referencefor purposes of anticipation."

In other words, a prior art method is enabled even if the reference which discloses the method "teaches away" (only relevant for obviousness); even if the reference states flat out that the method does not yield successful results; and even if as of the date of publication of the reference nobody skilled in the art believed that the method could yield the results later obtained by the patentee.

On the other hand, it must be noted that the CAFC has held that proving "enablement" of prior art under 102(a) or 102(b) requires less than proving enablement for 35 U.S.C. 112P1 purposes.

Also, as we know, the burden is on applicants and patentees to prove that a prior art reference is inoperable. But the CAFC has set that bar quite high.

The most interesting case in this regard is Rasmussen:

http://www.cafc.uscourts.gov/opinions/04-1191.pdf

In Rasmussen (an interference), the Board found a patent valid in view of 102(b) art, a published EP application, because (the Board concluded) the EP application was not enabled. The Board made two key findings of fact to support its conclusion: (1) there was no reasonable scientific basis for a person of ordinary skill in the art to conclude that the method in a prior art EP application would be effective [in treating prostate cancer]; and (2) a person of ordinary skill in the art as of the publication date of the EP patent would not have believed that the method described in the patent would be effective.

The CAFC **overturned* the conclusion of non-enablement based on those findings of fact, stating that "Under the legal standard set forth in Hafner and the cases that have followed it, those findings are insufficient to support the Board’s conclusion that EP ’383 is not an enabling referencefor purposes of anticipation."

In other words, a prior art method is enabled even if the reference which discloses the method "teaches away" (only relevant for obviousness); even if the reference states flat out that the method does not yield successful results; and even if as of the date of publication of the reference nobody skilled in the art believed that the method could yield the results later obtained by the patentee.

The patent family history includes a continuation-in-part (CIP) preceded by a continuation and an original utility patent application. Based on the prior art date, the issue boiled down to whether the asserted patents could claim priority through the CIP to the original application.

Patentee Bears Burden of Proving Priority. Despite the statutory presumption of validity, the CAFC first held that the patentee normally has the burden of proving priority. The exception is when the PTO considers the issue of priority during prosecution. In drafting the opinion, Judge Moore shifted the decision from a question of validity (where a presumption lies) to a question of effective filing date (where there is no statutory presumption). “When neither the PTO nor the Board has previously considered priority, there is simply no reason to presume that claims in a CIP application are entitled to the effective filing date of an earlier filed application.”

Interestingly, this decision falls runs parallel to Microsoft’s recent petition for certiorari in the z4 case.

Written Description: To claim priority to the original application date, that original application must “convey with reasonable clarity to those skilled in the art, as of the filing date sought, [that the inventor] was in possession of the [claimed] invention.” (Quoting Vas-Cath). Here, the original application disclosed a “display” and “user interface” while the asserted patent claimed a “customer interface.” Although these terms appear quite close, the CIP had added specific examples of a laptop customer interface while the original application only included interface embodiments attached to the vending machine. This makes a difference because the accused device uses a laptop and the patentee asked for a construction of the term that would include the laptop interface.

Holding: “Because none of this support was present in the Original Application and because the Original Application did not disclose a customer interface apart from the vending machine, the asserted claims are only entitled to the 2000 CIP Application.”